To: | Inmarsat Global Limited (efiling@knobbe.com) |
Subject: | U.S. Trademark Application Serial No. 88694831 - FLEET LTE - REDD024.017T |
Sent: | December 21, 2019 12:35:29 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88694831
Mark: FLEET LTE
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Correspondence Address: KNOBBE, MARTENS, OLSON & BEAR, LLP
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Applicant: Inmarsat Global Limited
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Reference/Docket No. REDD024.017T
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 21, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The applied-for mark is FLEET LTE for a bevy of goods/services which monitor/track/report on the status of various fleet using lte networks. See attached evidence regarding the meaning of “LTE” as a well-known abbreviation for “long term evolution,” a “4G wireless communications standard” that is “designed to provide up to 10x the speeds of 3G networks…” – also see the attached evidence from applicant’s press release.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, applicant’s goods/services function to monitor fleets using LTE technology.
In light of the foregoing, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant will be required to disclaim “LTE” because such wording appears to be generic in the context of applicant’s goods and/or services. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “LTE” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF GOODS/SERVICES
International Class 9
Applicant’s identification of Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units, antennae, mobile internet equipment and apparatus, modems, routers, advanced satellite modems and computer software; satellite tracking and positioning systems for maritime use; computer software programs for the operation and management of maritime satellite communication systems; parts and fittings for all the aforesaid goods must be clarified because it is too broad and could include goods/services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable computer software in International Class 9 and/or non-downloadable software in International Class 42. Moreover, tn the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
International Class 38
Applicant’s identification of Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services,voice and data transmission services, facsimile services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, to third parties to allow tracking and location of third party maritime assets, cargoes and personnel must be amended because it is indefinite. Applicant must further enumerate the services being identified, as exemplified in the suggested amendments below. See TMEP §§1402.01, 1402.03.
International Class 39
Applicant’s identification of Tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of maritime tracking and positioning services and systems must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass tracking, locating and monitoring of maritime vessels and cargo vessels by means of satellite technology for third parties for commercial purposes in International Class 35 and/or global positioning systems in International Class 9.
International Class 42
Applicant’s identification of design and development of computer firmware, computer software, computer systems, computer infrastructures for the operation of satellite communication and telecommunication equipment and management of satellite communication and telecommunication services is acceptable as currently identified and classified in International Class 42.
However, applicant’s identification of Design and development of systems, apparatus and instruments for the provision of telecommunication and satellite communications; design and development of telecommunications and satellite communications apparatus and equipment, including mobile telecommunications and satellite communications devices; design and development of tracking and positioning equipment and services; development of industry standards and procedures; technical support services for telecommunication and satellite communication systems, apparatus and instruments and associated computer software and firmware; technical support services for satellite communication and telecommunication equipment and services, including mobile telecommunications and satellite communications devices; satellite control services; technical evaluation and testing of satellite communications equipment; information, consultancy and advice relating to the aforesaid; all the aforesaid services relating to or for use in satellite communications, satellite operations and satellite applications must be amended because it is indefinite. Applicant must further enumerate the services being identified, as exemplified in the suggested amendments below. See TMEP §§1402.01, 1402.03.
Suggested Amendments
Applicant may substitute the following wording, if accurate:
International Class 9: Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, telephone and facsimile apparatus and instruments, namely, {specify goods in International Class 9}; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, computer terminals and keyboards; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, visual display units, namely {specify goods in International Class 9}; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, antennae; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, mobile internet equipment and apparatus, namely, modems, routers, advanced satellite modems; downloadable computer software for {specify function of the software, e.g., use as a spreadsheet, word processing, etc., and, if software is content or field specific, the content or field of use}; satellite tracking and positioning systems for maritime use, namely {specify the systems referenced within the realm of International Class 9}; downloadable computer software programs for the operation and management of maritime satellite communication systems; parts and fittings for all the aforesaid goods; global positioning systems.
International Class 35: Tracking, locating and monitoring of maritime vessels and cargo vessels by means of satellite technology for third parties for commercial purposes.
International Class 38: Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, transmission of electronic mail, electronic transmission of voice and data, facsimile transmission services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, namely transmission of information to third parties to allow tracking and location of third party maritime assets, cargoes and personnel.
International Class 42: Providing a website featuring non-downloadable software for computer software programs for the operation and management of maritime satellite communication systems; design and development of computer firmware, computer software, computer systems, computer infrastructures for the operation of satellite communication and telecommunication equipment and management of satellite communication and telecommunication services; Design and development of systems, apparatus and instruments for the provision of telecommunication and satellite communications, namely {specify apparatus and instruments within the realm of International Class 42}; design and development of telecommunications and satellite communications apparatus and equipment, namely, {specify the mobile telecommunications and satellite communications devices}; design and development of tracking and positioning equipment, namely {specify equipment}; developing accreditation standards for {indicate type of organization or nature of services} to the order and specification of others; technical support services for telecommunication and satellite communication systems, apparatus and instruments and associated computer software and firmware, namely {specify services within the realm of International Class 42}; technical support services for satellite communication and telecommunication equipment and services, namely {specify mobile telecommunications and satellite communications devices}; satellite control services, namely {specify services within the realm of International Class 42}; technical evaluation and testing of satellite communications equipment, namely {specify services and equipment within the realm of International Class 42}; all the aforesaid services relating to or for use in satellite communications, satellite operations and satellite applications.
Advisory
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services. See Nice Classification, 11th ed., version 2019 (Nice 11-2019). Applications filed on or after January 1, 2019 must comply with this new version. See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version. See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09. If applicant chooses to comply with the new version, the entire identification must comply with this version. See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries. See TMEP §1402.04.
OPTION TO DELETE SECTION 1(b) BASIS
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/Brittney Cogan/
Examining Attorney
Law Office 114
(571) 272-7973
brittney.cogan@uspto.gov
RESPONSE GUIDANCE